06.26.2026
Brand Promotion at International Sports Events
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As the whistle is blown to mark the kick-off of the football match, all eyes are on the pitch but the surrounding marketing cannot be unnoticed. The one-month long tournament is expected to draw football lovers and spectators around the world together, so it is undoubtedly a great opportunity for enhanced brand exposure. When taking a look at the banners in the stadiums, press room backboards, and even match timers and updates on the screen, one cannot ignore all the brands on display. Beyond sports supplies, snacks and beverages, technology and electronics, transport, and even personal care sectors are in the picture. Any sector can take part and exploit the widespread popularity of the football tournament that takes place every four years.
For brand owners, in addition to having their trademarks registered, there are the following noteworthy aspects in relation to maintenance and enforcement of these registered trademarks that need careful attention and actions.
1. Demonstrating lawful use
In Taiwan, registration of a trademark is valid for ten years and can be renewed to extend the registration by ten years. While presenting evidence of use is not required for renewal of a registered mark, the trademark proprietor will be required to submit evidence of use in order to defend registration of the trademark in dispute if another person files a revocation arguing that the trademark has not been put to use for three consecutive years. It should be noted that submitting evidence of use will also be required when the trademark proprietor files an invalidation trying to remove another person’s registered trademark post opposition period and citing his earlier registration that has been registered for more than three years.
Under the aforesaid circumstances, the trademark proprietor must demonstrate use of the registered trademark on the designated goods or services within the past three years, and such use must have occurred in Taiwan. That is, display of the trademark on banners and screens and during broadcasts seen by audiences in Taiwan is unlikely to be accepted as use on the goods or services in Taiwan.
In a judgment made by the Intellectual Property Court in 2020, the court held that use of the trademark “東急” (Tokyu) owned by Tokyu Corporation on “department stores” could not be found since Tokyu Corporation did not operate any department stores in Taiwan. The vouchers or leaflets that were disseminated during trade shows were a part of marketing campaigns, but it was in Japan where the services were provided or the purchasing transactions took place. Tokyu Corporation did not carry out economical activities or provide department store services in Taiwan, so there was no genuine use of the trademark.
2. Establishing the well-known status
The owner of a well-known trademark may prevent or remove registration of another person’s trademark if the trademark in dispute is identical or similar and thus likely to cause confusion or if the trademark in dispute is likely to dilute distinctiveness or reputation, even though the goods or services respectively covered by the trademark in dispute and the well-known trademark are not the same or not usually deemed similar. Under local practices here, the term “well-known” as prescribed in the Trademark Act refers to the circumstance where there is objective proof of a sign capable of being commonly recognized by the relevant enterprises or consumers.
Although recognition of a well-known trademark is based on perception of relevant consumers in Taiwan, use of the trademark outside of Taiwan may be taken into consideration as long as such use and reputation are accessible to consumers in Taiwan. In this context, the brands that are captured by cameras during the football tournament which is aired to international audiences, including viewers in Taiwan, should be in extensive use, and such use should be beneficial to gain protection for well-known trademarks.
In the matter of refusal of the trademark “IWATCH” filed by Apple Inc., the trademark “swatch” of Swatch AG was protected as a well-known trademark and served as a citation. When the case was reviewed by the Intellectual Property Court, the well-known status of the trademark “swatch” was reaffirmed. Swatch AG has continuously sold watches branded with “swatch” since 1983 and has achieved global sales of more than 200 million pieces by 2001. The court noted that swatch served as the official timekeeper of the Olympic Games held in 1996, 2000 and 2004, and the owner also started hosting various water sports events starting from 2011. In addition to obtaining registration of many “swatch” trademarks in Taiwan from 1983, the owner already set up stores all over the island to sell “swatch” products, not to mention online distribution and sale of “swatch” products.
3. Fighting against counterfeits and copycats
As marketing becomes successful and products are in high demand, counterfeits may emerge in the market. Brand owners are entitled to demand removal of infringement or prevention of potential infringement as well as ask for damages. As far as a well-known trademark is concerned, the trademark rights can still be enforced if there is likelihood of diluting its distinctiveness or reputation, even though another person uses an identical or similar trademark on dissimilar goods or services.
Under the Trademark Act in Taiwan, there are penal provisions to impose imprisonment and/or a fine to an individual who is found infringing a registered trademark. The penalty is applicable to unconsented use of an identical or similar trademark on identical or similar goods or services causing likelihood of confusion.
An actual example is a case where counterfeits of sneakers and socks respectively branded with “adidas” and the swoosh logo were available for sale through a Shopee account, and the individual who operated the Shopee account was prosecuted and found liable for selling fake products, given “adidas” and the swoosh logo were valid registered trademarks and well known to relevant businesses or consumers through marketing and sale in domestic and overseas markets.
Sponsoring international sports events is a costly investment. The brand owners, however, benefit from these brilliant marketing occasions. The predictable takeaways from sponsorship may be a spike in product sales and global market penetration. The official sponsors should have an edge over competitors in the same trade, as ambush marketing should be banned or prevented by the event organizers.
Whereas obtaining trademark registrations provides essential brand protection, the true value of brands derives from marketing and use of trademarks in the marketplace. The fine points mentioned above focus on distinctive legal provisions and practices pertaining to maintenance and enforcement of registered trademarks in Taiwan, in view of the ongoing football tournament, and are intended to serve as advice on consolidated brand protection.
References
[1] Administrative Judgment of the Intellectual Property Court, 2020 Xing Shang Su Zi No. 104 [智慧財產法院109年度行商訴字第104號行政判決].
[2] Administrative Judgment of the Intellectual Property Court, 2017 Xing Shang Su Zi No. 2 [智慧財產法院106年度行商訴字第2號行政判決]. The court decided to sustain the refusal against the trademark “IWATCH” for use on the goods in Class 14; nevertheless, the trademark “IWATCH” for use on the goods in Class 09 should be granted registration, and the relevant part of the refusal decision initially made by the Taiwan Intellectual Property Office was revoked.
[3] Criminal Judgment of Taiwan Taichung District Court, 2023 Zhi Yi Zi No. 91 [臺灣臺中地方法院112年度智易字第91號刑事判決].
For brand owners, in addition to having their trademarks registered, there are the following noteworthy aspects in relation to maintenance and enforcement of these registered trademarks that need careful attention and actions.
1. Demonstrating lawful use
In Taiwan, registration of a trademark is valid for ten years and can be renewed to extend the registration by ten years. While presenting evidence of use is not required for renewal of a registered mark, the trademark proprietor will be required to submit evidence of use in order to defend registration of the trademark in dispute if another person files a revocation arguing that the trademark has not been put to use for three consecutive years. It should be noted that submitting evidence of use will also be required when the trademark proprietor files an invalidation trying to remove another person’s registered trademark post opposition period and citing his earlier registration that has been registered for more than three years.
Under the aforesaid circumstances, the trademark proprietor must demonstrate use of the registered trademark on the designated goods or services within the past three years, and such use must have occurred in Taiwan. That is, display of the trademark on banners and screens and during broadcasts seen by audiences in Taiwan is unlikely to be accepted as use on the goods or services in Taiwan.
In a judgment made by the Intellectual Property Court in 2020, the court held that use of the trademark “東急” (Tokyu) owned by Tokyu Corporation on “department stores” could not be found since Tokyu Corporation did not operate any department stores in Taiwan. The vouchers or leaflets that were disseminated during trade shows were a part of marketing campaigns, but it was in Japan where the services were provided or the purchasing transactions took place. Tokyu Corporation did not carry out economical activities or provide department store services in Taiwan, so there was no genuine use of the trademark.
2. Establishing the well-known status
The owner of a well-known trademark may prevent or remove registration of another person’s trademark if the trademark in dispute is identical or similar and thus likely to cause confusion or if the trademark in dispute is likely to dilute distinctiveness or reputation, even though the goods or services respectively covered by the trademark in dispute and the well-known trademark are not the same or not usually deemed similar. Under local practices here, the term “well-known” as prescribed in the Trademark Act refers to the circumstance where there is objective proof of a sign capable of being commonly recognized by the relevant enterprises or consumers.
Although recognition of a well-known trademark is based on perception of relevant consumers in Taiwan, use of the trademark outside of Taiwan may be taken into consideration as long as such use and reputation are accessible to consumers in Taiwan. In this context, the brands that are captured by cameras during the football tournament which is aired to international audiences, including viewers in Taiwan, should be in extensive use, and such use should be beneficial to gain protection for well-known trademarks.
In the matter of refusal of the trademark “IWATCH” filed by Apple Inc., the trademark “swatch” of Swatch AG was protected as a well-known trademark and served as a citation. When the case was reviewed by the Intellectual Property Court, the well-known status of the trademark “swatch” was reaffirmed. Swatch AG has continuously sold watches branded with “swatch” since 1983 and has achieved global sales of more than 200 million pieces by 2001. The court noted that swatch served as the official timekeeper of the Olympic Games held in 1996, 2000 and 2004, and the owner also started hosting various water sports events starting from 2011. In addition to obtaining registration of many “swatch” trademarks in Taiwan from 1983, the owner already set up stores all over the island to sell “swatch” products, not to mention online distribution and sale of “swatch” products.
3. Fighting against counterfeits and copycats
As marketing becomes successful and products are in high demand, counterfeits may emerge in the market. Brand owners are entitled to demand removal of infringement or prevention of potential infringement as well as ask for damages. As far as a well-known trademark is concerned, the trademark rights can still be enforced if there is likelihood of diluting its distinctiveness or reputation, even though another person uses an identical or similar trademark on dissimilar goods or services.
Under the Trademark Act in Taiwan, there are penal provisions to impose imprisonment and/or a fine to an individual who is found infringing a registered trademark. The penalty is applicable to unconsented use of an identical or similar trademark on identical or similar goods or services causing likelihood of confusion.
An actual example is a case where counterfeits of sneakers and socks respectively branded with “adidas” and the swoosh logo were available for sale through a Shopee account, and the individual who operated the Shopee account was prosecuted and found liable for selling fake products, given “adidas” and the swoosh logo were valid registered trademarks and well known to relevant businesses or consumers through marketing and sale in domestic and overseas markets.
Sponsoring international sports events is a costly investment. The brand owners, however, benefit from these brilliant marketing occasions. The predictable takeaways from sponsorship may be a spike in product sales and global market penetration. The official sponsors should have an edge over competitors in the same trade, as ambush marketing should be banned or prevented by the event organizers.
Whereas obtaining trademark registrations provides essential brand protection, the true value of brands derives from marketing and use of trademarks in the marketplace. The fine points mentioned above focus on distinctive legal provisions and practices pertaining to maintenance and enforcement of registered trademarks in Taiwan, in view of the ongoing football tournament, and are intended to serve as advice on consolidated brand protection.
References
[1] Administrative Judgment of the Intellectual Property Court, 2020 Xing Shang Su Zi No. 104 [智慧財產法院109年度行商訴字第104號行政判決].
[2] Administrative Judgment of the Intellectual Property Court, 2017 Xing Shang Su Zi No. 2 [智慧財產法院106年度行商訴字第2號行政判決]. The court decided to sustain the refusal against the trademark “IWATCH” for use on the goods in Class 14; nevertheless, the trademark “IWATCH” for use on the goods in Class 09 should be granted registration, and the relevant part of the refusal decision initially made by the Taiwan Intellectual Property Office was revoked.
[3] Criminal Judgment of Taiwan Taichung District Court, 2023 Zhi Yi Zi No. 91 [臺灣臺中地方法院112年度智易字第91號刑事判決].
